Dell Inc v. NXP BV

1. Case Identification

• Case #: IPR2015-01349
• Patent #: Patent 8,280,304
• Filed: June 5, 2015
• Petitioner(s): Dell Inc.
• Patent Owner(s): NXP BV.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Device with an EEPROM Having Both a Near Field Communication Interface and a Second Interface
• Brief Description: The ’304 patent discloses a device, such as a peripheral, that uses a Near Field Communication (NFC) interface to receive authentication data for pairing with another device. This data is stored in a shared EEPROM, which can also be accessed by a second data interface connected to a microprocessor-based circuit (e.g., Bluetooth) to establish a wireless connection.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 5-6, and 8 under 35 U.S.C. §102(e) by Dua

• Prior Art Relied Upon: Dua (Patent 8,244,179).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dua, which was not considered during prosecution, discloses every limitation of independent claim 1 and several dependent claims. Petitioner asserted that Dua’s media player, which includes an RFID Tag-Reader Module capable of operating in a passive NFC mode, meets the "passive NFC interface" limitation. The module’s RFID Tag-Reader Controller, which manages communication with the media player’s CPU, was identified as the claimed "data interface." Petitioner further contended that Dua’s combination of a CPU and a short-range Bluetooth transceiver constitutes the claimed "microprocessor based circuit." Finally, Petitioner argued that Dua’s RFID Tag-Reader Module contains a single, shared memory accessible by both the NFC and data interfaces, and that this memory stores authentication data (e.g., security settings, PINs, passwords) to facilitate Bluetooth pairing.

Ground 2: Claim 4 is obvious over Dua in view of Cromer

• Prior Art Relied Upon: Dua (Patent 8,244,179) and Cromer (Patent 6,647,497).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that while Dua discloses all elements of claim 1, its shared memory is described as a general "nonvolatile configurable memory." Cromer was cited for its explicit disclosure of a dual-ported EEPROM memory that is accessible by both an RFID interface and a separate serial interface, directly teaching the specific memory type recited in claim 4.
  • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA) would be motivated to combine the references because both address the same problem of providing security information to a device using a short-range wireless link rather than cumbersome manual input. A POSITA would logically look to Cromer’s well-known EEPROM memory solution to implement the shared memory function in Dua’s system.
  • Expectation of Success: The proposed modification was framed as a simple substitution of one known type of nonvolatile memory (EEPROM from Cromer) for another (the memory in Dua), which would predictably result in a device with the claimed characteristics without requiring any undue experimentation.

Ground 3: Method Claims 11-12 and 20 are obvious over Dua in view of Lewis

• Prior Art Relied Upon: Dua (Patent 8,244,179) and Lewis (Patent 6,876,295).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Dua teaches the core method of "simply pairing" devices by using NFC to automatically exchange communication and security settings to establish a Bluetooth connection. Lewis was introduced for its teaching of a peripheral device that uses a purely passive RF tag to receive and store configuration data (including passwords and encryption keys) in a dual-ported memory. When the device is later powered on, a processor accesses this data via a second interface. Combining these references, Petitioner argued, discloses the full method of claim 11, including storing authentication data in a peripheral using a passive NFC interface and later retrieving it via a second interface.
  • Motivation to Combine: A POSITA seeking to implement the automated pairing system of Dua would find it obvious to incorporate the passive tag architecture from Lewis. Both references solve the problem of simplifying device configuration. Using Lewis’s design would allow a peripheral device, such as Dua’s headphone, to be provisioned with pairing data using a simple, unpowered passive tag, a known and advantageous technique.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination merely involved applying the known data-storage-and-retrieval architecture of Lewis to the known automated pairing context of Dua, yielding a predictable improvement in functionality.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Dua with Van Rijnswou (for storing data in a predetermined memory location) and Visser (for adding headset microphone functionality), as well as three- and four-way combinations of the prior art.

4. Key Claim Construction Positions

• "Passive Near Field Communication (NFC) Interface": Petitioner argued this term should be construed as "a hardware component that enables communication between two devices via NFC signals by modulating an RF field generated by an NFC initiator." This construction was based on industry standards (NFCIP-1) and was used to map Dua's RFID tag, operating in a passive mode, to the claimed interface.
• "Passive Near Field Communication (NFC) Circuit": Petitioner proposed this term, recited in claim 15, be construed as "an antenna used to communicate NFC signals." Petitioner argued that because claim 15 locates the "NFC interface" between the EEPROM and the "passive NFC circuit," the two terms must refer to distinct components. As the patent figures show the interface chip between the memory and the antenna, this construction was necessary to give meaning to both terms.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 8,280,304 as unpatentable.